George Washington PIERCE, Plaintiff-Appellant,

United States Court of Appeals, First Circuit.

David Rines and Robert H. Rines, Boston, Mass., with whom Rines &Rines, Boston, Mass., were on the brief, for appellant.William R. Hulbert, Boston, Mass., with whom William Rymer, Jr., Fish,Richardson & Neave, Boston, Mass., and Flehr & Swain, San Francisco,Cal., were on the brief, for appellees.Before MAGRUDER, Chief Judge, and WOODBURY and HARTIGAN,Circuit judges.HARTIGAN, Circuit Judge.

This is an appeal from an order of the United States District Court for theDistrict of Massachusetts entered October 22, 1954, denying the plaintiff'smotion for a preliminary injunction and granting the defendants' motion forpartial summary judgment. In his complaint the plaintiff alleged infringementof six patents including claims 51, 52, 54, 55, 56 and 61 to 68 inclusive, ofpatent No. 2,133,642. The defendants, after the plaintiff moved for apreliminary injunction confined to the defendants' asserted infringement of theabove enumerated claims of patent No. 2,133,642, moved for a partialsummary judgment declaring those claims invalid. The district court in grantingthe defendants' motion based its decision on the ground that this Court inAmerican Communications Co. v. Pierce, 1 Cir., 1953, 208 F.2d 763, certiorari

The plaintiff bases his appeal in effect on two grounds: (1) that this Court inAmerican Communications Co. v. Pierce, supra, did not hold these claims to beinvalid for double patenting and (2) that these claims are not invalid for doublepatenting.

The plaintiff in his construction of our opinion in the American

In our decision we relied on the law set forth in Miller v. Eagle ManufacturingCo., 1894, 151 U.S. 186, 14 S.Ct. 310, 38 L.Ed. 121, and Palmer PneumaticTire Co. v. Lozier, 6 Cir., 1898, 90 F. 732. It is not necessary now to repeat thelanguage we cited in the American Communications Co. case from the Millerand Palmer Pneumatic Tire Co. opinions. It is enough to say that we found inthe American Communications Co. case that the plaintiff in patents Nos.1,789,496 and 2,133,642 made only one distinctive contribution to the 'Progressof Science and useful Arts,' U.S.Const. Art. I, 8, and that was the invention ofa two electrode piezo-electric crystal in a single vacuum tube circuit. The utilityof this invention was that it obtained to a much greater extent than had beenpreviously possible a constant frequency of oscillations.

The plaintiff now contends that this Court did not understand that the resultobtained under his earlier patent No. 1,789,496 was a constant beat frequencyresulting from the difference in the frequency of oscillations of the receiver andthe frequency of oscillations of the transmitter. This beat is comparable to thebeat produced when two tuning forks are caused to vibrate at slightly differentfrequencies, but in place of the tuning forks are two oscillating circuits, one inthe transmitter and one in the receiver. But there is no element of invention inthe idea that if one employs two circuits each of which produces oscillations atconstant or stabilized frequencies the beat resulting from the differencebetween these two frequencies would be more stabilized and constant thanwould be the case if each of the circuits produced oscillations at frequencieswhich could not be fully controlled. In other words, it is obvious that if atransmitter is able to operate at a constant frequency and the correspondingreceiver also operates at a constant frequency that any beat resulting from theircombination will also be more constant than would be the case if the receiveror transmitter or both were unable to operate at a constant frequency.

The plaintiff cannot claim that patent No. 1,789,496 is a valid invention merelyon the ground that through it a beat is produced for in Kintner v. AtlanticCommunication Co., D.C.S.D.N.Y.1917, 241 F. 956, the use of oscillatingcircuits to obtain a beat was shown to be the subject of a patent antedating theplaintiff's application by almost twenty years. The plaintiff also cannotsuccessfully contend that his earlier patent No. 1,789,496 constitutes a validinvention merely because through the employment of prior artelectromechanical vibrators it obtains a more constant beat, for prior to theplaintiff's application for his patent electromechanical vibrators had been usedin an attempt to stabilize the frequency of oscillations of an electric circuit.Although these earlier electromechanical vibrators were less efficient than theplaintiff's two electrode piezoelectric crystal in maintaining a constantfrequency of oscillations, they did achieve some control over the frequency ofoscillations and consequently when employed in transmitting and receivingequipment a more constant beat would be produced than had been possible incircuits not employing such electromechanical vibrators.

The plaintiff received patent No. 1,789,496 only because of his contribution ofa device which stabilized the frequency of oscillations of an electric circuit.Without this device the patent would not have been granted. The plaintiffcannot extract this essential element and make it the subject of a subsequentpatent. Palmer Pneumatic Tire Co. v. Lozier, supra, 90 F. at page 744; seeApplication of Horneman, 1952, 194 F.2d 108, 39 C.C.P.A., Patents, 809. ThePierce oscillator, the subject of patent No. 2,133,642 rather than the productionof a constant beat, is the essential distinguishing feature of combination patentNo. 1,789,496. See Application of Coleman, 1951, 189 F.2d 976, 38 C.C.P.A.,Patents, 1156.

In Palmer v. John E. Brown Mfg. Co., 1 Cir., 1899, 92 F. 925, cited by theplaintiff, the patentee's combination patent was sustained on the ground that theinvention of a quilting machine which was the result of combining thepatentee's 'mechanical movement', the subject of his basic patent, with aworkholder and sewing machine required perception as such combination wasnot an obvious one. In the instant case, the inclusion of the plaintiff's piezoelectric oscillator in a transmitting and receiving system did not involve anyelement of perception, as the principal purpose of the oscillator, if not its onlypurpose, was in the transmission or reception of intelligence by means of highfrequency currents.

The plaintiff in 1924 applied for one patent but the Patent Office erroneouslyrequired a divisional application with regard to the claims now found in patentNo. 1,789,496. The Patent Office thus in effect stated that the plaintiff had two

separate inventions, but we are not bound by such a holding and the patent inissue will not be sustained merely because of a requirement of division orderedby the Patent Office.10

The plaintiff contends that section 121 of the Patent Act of 19521 should beapplied by the Court in the instant case and that this statute would prevent theuse of the plaintiff's earlier patent as a reference in this case. However, thestatute expressly refers to patents '* * * issuing on an application with respect towhich a requirement for restriction under this section has been made * * *.' ThePatent Act of 1952 took effect on January 1, 1953. Plaintiff's patent No.2,133,642 was granted on October 18, 1938. It was, therefore, impossible forthe plaintiff's patent to have been issued on an application which was requiredto be restricted under the 1952 Act and consequently 121 is inapplicable inthe instant case. See Application of Eisler, 1953, 203 F.2d 726, 40 C.C.P.A.,Patents, 913.

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The judgment of the district court is affirmed.

35 U.S.C' 121. Divisional applications'If two or more independent and distinct inventions are claimed in oneapplication, the Commissioner may require the application to be restricted toone of the inventions. If the other invention is made the subject of a divisionalapplication which complies with the requirements of section 120 of this title itshall be entitled to the benefit of the filing date of the original application. Apatent issuing on an application with respect to which a requirement forrestriction under this section has been made, or on an application filed as aresult of such a requirement, shall not be used as a reference either in the PatentOffice or in the courts against a divisional application or against the originalapplication or any patent issued on either of them, if the divisional applicationis filed before the issuance of the patent on the other application. If a divisionalapplication is directed solely to subject matter described and claimed in theoriginal application as filed, the Commissioner may dispense with signing andexecution by the inventor. The validity of a patent shall not be questioned forfailure of the Commissioner to require the application to be restricted to oneinvention.'